Ex Parte Daddis et al

Board of Patent Appeals and Interferences

Mar 31, 2004

09004254 (B.P.A.I. Mar. 31, 2004)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ELIZABETH B. DADDIS, C. MICHAEL RAY,
ROBERT G. HAMER, SUSAN B. LAYER,
REX B. MURPHY, GARY R. KERN,
EVERETT W. JENKINS, ANNE E. DEWITTE,
ROBERT W. RASSLER, and DAVID S. MATTHEWS
____________
Appeal No. 2002-1505
Application No. 09/004,254
____________
ON BRIEF
____________
Before FLEMING, DIXON, and LEVY, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-17,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2002-1505
Application No. 09/004,254
2
BACKGROUND
The appellants’ invention relates to a customer product installation/configuration.
An understanding of the invention can be derived from a reading of exemplary claim 1,
which is reproduced below.
1. In an electronic image processing apparatus comprising a plurality
of resources including a marking machine, a source of copy sheets, and a
controller, a method of determining the configuration of the plurality of
resources comprising the steps of:
running turn around tests to determine the interconnection of the
resources,
comparing the determined interconnection to a reference
interconnection stored in memory,
displaying the difference of interconnections between the reference
and the determined interconnections,
confirming the difference and loading the determined
interconnection into memory, and
setting up the machine based upon the determined
interconnection.
The prior art reference of record relied upon by the examiner in rejecting the
appealed claims is:
Fukui et al. (Fukui) 5,678,135 Oct. 14, 1997
Claims 1-17 stand rejected under 35 U.S.C. § 102 as being anticipated by Fukui.
Appeal No. 2002-1505
Application No. 09/004,254
3
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellants regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 9, mailed Jun. 13, 2001) for the examiner's reasoning in support of
the rejections, and to appellants’ brief (Paper No. 7, filed Feb. 6, 2001) and reply brief
(Paper No. 10, filed Aug. 16, 2001) for appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims, to the applied prior art reference, and to the
respective positions articulated by appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
35 U.S.C. § 102
To support a rejection of a claim under 35 U.S.C. § 102(b), it must be shown that
each element of the claim is found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v. Kimberly-Clark Corp., 713
F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026
(1984).
It is well settled that the burden of establishing a prima facie case of anticipation
resides with the Patent and Trademark Office (PTO). See In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Appellants argue that the examiner
has not set forth a prima facie case of anticipation since Fukui does not teach the
Appeal No. 2002-1505
Application No. 09/004,254
4
claimed confirmation step as recited in each of the independent claims. (See brief at
pages 4-5.) In our view, we agree that the examiner has not set forth a prima facie
case of anticipation. The examiner maintains that Fukui discloses that the “differences
between the determined and reference interconnections are confirmed and loaded into
the RAM . . . (column 18, lines 51-56).” We do not find that this specific portion teaches
the confirmation of the configuration as maintained by the examiner and the examiner
has not identified any other teaching in Fukui to teach this limitation. Since the
examiner has not met the initial burden of establishing a prima facie case of
anticipation, we will not sustain the rejection of independent claims 1 and 11 and their
respective dependent claims.
Alternatively, the examiner maintains that with respect to claims 8 and 10 “that
confirming the difference step is performed by an operator (column 14, lines 48-52).”
Appellants argue that the referenced portion of Fukui simply indicates that when a
function is added to a copier, an operator accesses an added function via the display
panel. (See brief at page 5.) We agree with appellants, and we do not find that the
examiner has shown where Fukui teaches this limitation. Since the examiner has not
met the initial burden of establishing a prima facie case of anticipation, we will not
sustain the rejection of independent claims 8 and 10 and their dependent claims.
CONCLUSION
Appeal No. 2002-1505
Application No. 09/004,254
5
To summarize, the decision of the examiner to reject claims 1-17 under
35 U.S.C. § 102 is reversed.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
JD/rwk
Appeal No. 2002-1505
Application No. 09/004,254
6
RONALD ZIBELLI
XEROX CORPORATION
XEROX SQUARE 20A
ROCHESTER, NY 14644